McGee - Greene, Desir¿e

Patent Trials and Appeals Board

Jan 16, 2020

15286240 - (D) (P.T.A.B. Jan. 16, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/286,240 10/05/2016 Desir¿e McGee - Greene SK12125 9031
44088 7590 01/16/2020
KAUFHOLD DIX PATENT LAW
P. O. BOX 89626
SIOUX FALLS, SD 57109
EXAMINER
STEVENS, ALLAN D
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
01/16/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
jason@kaufholdlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DESIRÉE MCGEE-GREENE
Appeal 2019-004498
Application 15/286,240
Technology Center 3700
Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and
BRADLEY B. BAYAT, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 4–6, and 8. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
According to Appellant, the disclosure relates “to a new storage
device for organizing items in an elementary educational environment.”

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as the
Appellant, Desiree McGee-Greene. Appeal Br. 1.
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Application 15/286,240

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Spec. 2, ll. 1–3. Claims 1 and 8 are the independent claims under appeal.
Below, we reproduce claim 1 as illustrative of the claimed subject matter:
1. A school supplies storage system comprising:
a plurality of writing utensils;
a plurality of books;
a storage unit being selectively positioned between a
folded position and an unfolded position, said storage unit
forming a book case when said storage unit is in said folded
position, each of said books being positioned in said book case
such that each of said books is vertically oriented having a
binding of each of said books being exposed wherein said
plurality of books is configured to be identified by title, said
storage unit having a plurality of pockets, each of said writing
utensils being positioned in selected ones of said pockets
wherein each of said writing utensils is configured to be
accessible for writing, said storage unit including a name plate
wherein said name plate is configured to identify a user of said
storage unit;
wherein said storage unit comprises a panel having a first
surface, a second surface and a peripheral edge extending
therebetween, said peripheral edge having a top side and a
bottom side, said panel having a plurality of first bends thereon,
each of said first bends extending between said top side and
said bottom side, said first bends being spaced apart from each
other and being distributed on said panel, said first bends
defining a plurality of upper portions of said panel wherein each
of said upper portions is configured to be manipulated between
said folded position and said unfolded position, said plurality of
upper portions includes a back portion, a first side portion, a
second side portion, a front portion and a tab portion, each of
said first side portion and said second side portion having a
distal edge with respect to said back portion; and
wherein said plurality of pockets includes a set of outer
pockets and a set of inner pockets, each of said outer pockets
being positioned on said second surface of an associated one of
said first side portion and said back portion, each of said inner
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Application 15/286,240

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pockets being positioned on said first surface of an associated
one of said first side portion and said front portion.
REJECTIONS2 AND PRIOR ART
The Examiner rejects the claims as follows:
I. Claim 1 under 35 U.S.C. § 103 as unpatentable based on Su
(US 2009/0255881 A1, pub. Oct. 15, 2009), Benn
(US 2005/0098509 A1, pub. May 12, 2005), White (US 8,567,799 B2,
iss. Oct. 29, 2013), and Ong (US 6,945,399 B1, iss. Sept. 20, 2005);
II. Claim 4 under 35 U.S.C. § 103 as unpatentable based on Su, Benn,
White, Ong, and Schade (US 3,592,344, iss. July 13, 1971);
III. Claim 5 under 35 U.S.C. § 103 as unpatentable based on Su, Benn,
White, Ong, and Mengistu et al. (US 2008/0067221 A1, pub. Mar. 20,
2008) (“Mengistu”);
IV. Claim 6 under 35 U.S.C. § 103 as unpatentable based on Su, Benn,
White, Ong, and Hamilton (US 2008/0237288 A1, pub. Oct. 2, 2008);
and

2 Appellant argues that the Examiner errs by failing to withdraw drawing
objections, and by refusing to enter amendments to the Specification and
claims to overcome objections to each. See Appeal Br. 7–8 (Arguments I–
III). However, these issues are reviewable, if at all, by filing a petition for
the Director’s review. See In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002)
(citing In re Hengehold, 440 F.2d 1395, 1403–04 (CCPA 1971) (stating that
there are many kinds of decisions made by examiners that are not appealable
to the Board when such decisions are not directly connected with the merits
of issues involving rejections of claims, and holding that “the kind of
adverse decisions of examiners which are reviewable by the [B]oard must be
those which relate, at least indirectly, to matters involving the rejection of
claims”)); see MPEP §§ 706.01, 1002.02(c)(4), 1201 (the Board will not
ordinarily hear a question that is reviewable by petition).
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V. Claim 8 under 35 U.S.C. § 103 as unpatentable based on Su, Benn,
White, Hamilton, Mengistu, Ong, and Schade.
OPINION
Rejections I–V—Obviousness rejections of independent claims 1 and 8, and
dependent claims 4–6
To support independent claim 1’s rejection, the Examiner finds that
Su discloses certain elements of the claimed storage system, but does not
disclose the claimed “inner pockets.” Answer 2–3. Instead, the Examiner
finds that Ong discloses the inner pockets, as claimed. Id. at 4. According
to the Examiner,
[i]t would have been obvious . . . to have provided . . . [certain]
panel[s] . . . of Su with hanging pockets . . . as taught by Ong, in order
to safely carry and transport digital copies of the held books . . . with
the physical copies[,] . . . as Appellant provided no criticality to the
location of the inner pockets.
Id. Appellant argues that the Examiner errs because “the rejection merely
finds a reference[, Ong,] which arguably has inner pockets[,] and fails to
adequately explain why a person . . . would have motivation, based on
evidence, to make a modification or combination to include inner pockets
meeting the specific limitations of the claims.” Appeal Br. 9.
We are not persuaded by Appellant’s argument. It is well known that
“rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Here, the Examiner provides
a motivation to combine Ong’s inner pockets with Su’s storage system—i.e.,
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Application 15/286,240

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“in order to safely carry and transport digital copies of the held books . . .
with the physical copies.” Answer 4. Therefore, the Examiner provides an
articulated reasoning with some rational underpinning sufficient to support
the rejection.
Further, the combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results. KSR, 550 U.S. at 416. Still further, “if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” Id. at 417.
Thus, when considering obviousness of a combination of known elements,
the operative question is “whether the improvement is more than the
predictable use of prior-art elements according to their established
functions.” Id. Here, adding an inner pocket to a storage system would not
be beyond the skill of the ordinary artisan, and would operate the same way
after combination as before, with predictable results. Thus, Appellant does
not persuade us that the Examiner errs.
To the extent that Appellant is arguing that claim 1’s rejection is in
error because the references themselves do not provide any motivation to
combine the references as the Examiner proposes, we are not persuaded of
error. See Appeal Br. 9 (“The cited references . . . do not provide the
required evidence[;] i.e.[,] motivation as evidenced or linked to any specific
teaching of the references.”). For the reasons discussed above, the Examiner
provides an articulated reasoning with some rational underpinning, which is
sufficient to support the rejection. See KSR, 550 U.S. at 419. Thus, the
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Examiner need not find a motivation to combine the references, such as in
the references themselves.
Appellant further argues that the Examiner errs based on the
Examiner’s determination that although Ong’s inner pocket is “on a
longitudinal side of the tote box,” it would have been obvious to place it on
both a front and side portion or wall of Su’s storage system. Answer 4.
Specifically, Appellant argues that “the claim specifies the inner pockets are
positioned specifically on other claimed elements defining a positional
relationship not shown, suggested, or contemplated in the cited references,”
and that the Examiner’s reasoning why it would be advantageous to position
Ong’s pockets as claimed is “speculative.” Appeal Br. 9–10. In response,
the Examiner finds that although Ong shows the inner pocket against a
“back wall,” Ong describes this wall as a “longitudinal wall,” and Su’s side
wall is also a longitudinal wall. Answer 16. Further, we agree with the
Examiner that Appellant indicates “no criticality to the location of the inner
pockets” on the side and front walls. Answer 4. Based on our review of the
record, the Examiner adequately supports that it would have been obvious to
use Ong’s inner pockets on Su’s front and side walls, consistent with
claim 1’s recitations.
For the reasons discussed above, we sustain the Examiner’s
obviousness rejection of independent claim 1. We also sustain the
obviousness rejections of claims 4–6 that depend from claim 1, and
independent claim 8, which Appellant argues are in error for the same
reasons as claim 1. Appeal Br. 10.
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CONCLUSION
We AFFIRM the Examiner’s obviousness rejections of claims 1, 4–6,
and 8.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1 103 Su, Benn, White, Ong, 1
4 103 Su, Benn, White, Ong,
Schade
4
5 103 Su, Benn, White, Ong,
Mengistu
5
6 103 Su, Benn, White, Ong,
Hamilton
6
8 103 Su, Benn, White,
Hamilton, Mengistu,
Ong, Schade
8
Overall
Outcome:
1, 4–6, 8
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED